Essay by Mr Gerald M Levine, Part 3
Gerald M. Levine, Esq. is a UDRP Panelist and counsel, and is the author of the Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting (2019) and The Clash of Trademarks and and Domain Names on the Internet (2024). He also has an upcoming book with David Weslow on the ACPA.
Help! Someone has registered a Domain Name Corresponding to my Trademark.
Help! I’m being Accused of Squatting on Someone’s Trademark.
PART 3: HOW DID A UDRP JURISPRUDENCE COME TO BE BUILT?
In closing Part 2 I cited the Panel’s comment in Pick Enterprises (2012) . It said that “[t]he Policy has been in force for more than a decade and the thousands of cases decided under it now constitute a workable body of (to use a legal term) precedent.” And in determining to sanction Complainant for RDNH the Panel explained: “The fact that Complainant is represented by counsel makes the filing of this Complaint all the more inexcusable. The matters identified in the preceding paragraph are not Policy arcana; each is a precedent of long standing and derived from scores of cases, and each addresses a fundamental Policy requirement.”
Pick Enterprises expresses A view that had consolidated by 2012 and continues to today: parties and representatives are expected to be “to be familiar” with the law. I’ll briefly discuss the development of this body within the UDRP framework before pointing to diverse print and online material parties and their representatives may wish to consult. As I mentioned in Part 1, the magnitude of cases per month is so great that it’s impossible to be on top of more than a handful of them. The cases cited in this essay, is an attempt to bring to the readers’ attention well-written and reasoned decisions on a number of issues. It is in these cases that the law is to be found.
No less than in common law courts, the UDRP is intensely interactive and collegial, and as there, evidence, argument, and presentation (or narrative) are the keys to persuasion. As with judges, panelists are called upon to resolve disputes based on the record before them, which if barren of evidence benefits the opposing party. Most importantly, there is an emphasis on consistency and predictability.
As in the common law tradition, panelists are not inquisitors— “It is not the function of the Panel to start an investigation of its own to establish the facts behind [a party’s] allegation and whether it has any merit and the Panel discounts it” (N. Gardner)—rather, panelists are responsive to both their peers’ constructions of the Policy language by accepting authoritative decisions as well as the arguments presented pro and con by the parties in the papers they submit. The US federal judge’s comment quoted in Part 2 will be recalled: “There are good cybersquatting cases and there are bad ones. And this is really one of the bad ones.” What makes for a “bad one” is a kind of blindness to a panelist’s reception of what he receives, both in proof and law.
Whether we call this body of law precedent, or as some would have it more simply hewing to consensus, panelists do not take kindly to parties or their representatives unfamiliar with what is expected of them. It is noteworthy that panelists’ views have changed over time. Rights have become more clearly defined. This can be traced to respondents’ (and their representatives’) persuasive arguments that have expanded the respective definitions of rights. And in turn, these arguments have been influential in setting the direction of the law result in in the overturning of earlier views and establishing new consensus views.
When in October 1999 ICANN implemented the UDRP panelists had no law to draw upon, except a few US cases and one in the UK adjudicating domain name disputes in the context of trademark law. (There is not time or space in this essay to discuss the
domestication of national law into the UDRP except to say that it is not entirely absent). It may surprise those who have not considered it, that the first generation of panelists were the prime contributors to the development of cybersquatting law which they were called upon to both create and apply.
This is precisely what WIPO anticipated: “[It] hoped [. . .] that with experience and time, confidence will be built up in the credibility and consistency of decisions made under the procedure, so that the parties would resort less and less to litigation.” Final Report of the WIPO Internet Domain Name Process, Para. 153. It did not utter the word “jurisprudence” at that time, but as we shall see, that’s what it had in mind.
On an abstract level, WIPO’s anticipation is not at all surprising, nor is it surprising that it makes every effort to direct the jurisprudence in a preferred direction. What is surprising is that the emerging consensus should construe Para. 4(c)(i) to include the domain investment business as a “bona fide offering of [ ] services.” It was this close attention in distinguishing rights that triggered the development of the secondary market for domain names.
That such a market would evolve could not have been expected but panelists came increasingly to respect respondents having a lawful economic goal where there is no evidence of targeting. We can see that in so doing, they expanded the pie of rights, in effect a redistribution of rights in favor of domain name registrants and particularly of investors. This could not have been expected.
We see in the 95% class where respondents appear and lose and in the 5% class with complainants or their representatives that they are dazed about what they have to prove and what evidence to marshal despite this well-established and accessible jurisprudence.[1] They lose as the cited cases in Parts 1 and 2 illustrate because they have no idea what they have to do to persuade and prevail.
This has best been expressed in cases in which panelists have sanctioned complainants (whether requested or not) for reverse domain name hijacking as I noted earlier. “Professional representatives of parties in UDRP proceedings are expected to be aware of or at least familiarize themselves with the Policy and Policy precedent, and to abide by the Policy and Rules,” (K. Fong, L. Trakman and R. Lyons).
From a time of no law when ICANN implemented the UDRP in 1999 to a time of a well-developed body of law which there now is, there have been well over 120,000 decisions (a multiple of cases many times greater than decided by US federal courts under the Anticybersquatting Consumer Protection Act (ACPA)). These decisions can be usefully divided between a smaller group of panelists writing well-informed, reasoned and authoritative decisions and a larger group that adopt these earlier decisions as authority. I do not mean by saying this that the consensus-verifiers are any less important. Indeed, it this larger body that reinforces the consensus by repetition. They could equally, as they have, rejected outliers as authority, as they did with certain debunked theories of law.
As in physics so also in the order that is created through consensus, there is a tendency of any system to gradually decline to disorder unless it is insistently curated. From the start in 2000 through, say 2014, there were panelists going separate ways but this diminished over time as panelists recognized the need for order (indeed, insisted on it). WIPO’s first Overview of Panel Views on Selected WIPO Questions published in 2005 was a conscious effort for order.
- Bernstein’s authoritative decisions beginning with Nikon Corporation (Nikon Japan) Nikon Inc. (USA) (2001) (which itself was built on earlier expressions of such a need) regarding consistency were clearly influential in bringing this about: “Not only do such decisions frequently have persuasive weight and authority, but also, they reflect a consensus that is worthy of some deference.” And in another case by the same Panel, “When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions.” Referring to the emphasis in the WIPO Overview Bernstein notes that it “reflects a studied and considered summary of consensus positions culled by WIPO from the decisions of numerous WIPO panelists during the first five years of administration of the UDRP.”[2] WIPO subsequently published revisions of the Overview in 2011 and 2017.
The Overviews cannot but be regarded otherwise than a masterpiece of taxonomy. Each section is introduced with a question followed by a capsulation of the consensus. In essence the editor(s) attempted, and for the most part have done so successfully, to restate the emerging consensus that preceded each of its publications. Hence, there have been reformulations to address new circumstances with each update. However, law does not stop developing. Indeed, WIPO’s attempt to curate the direction of this consensus is problematic, but on the positive side panelists more recently than the 2017 edition continue to address and offer a more nuanced understanding of parties’ rights.
In this regard, it is important to underscore that these restatements are not the law, but an attempt to state what panelists have concluded is consistent with the dictates of the Policy. New circumstances may arise, have indeed arisen that call for some rethinking or re-reasoning as to parties’ rights to the disputed domain name. For this reason, commentators have argued that a revised Overview is overdue. They believe that Panels are citing, even in some instances overciting the Overview as if it were the law rather than commentary that states the consensus as it existed in 2017.
This is evident as each new Overview replaced the earlier. It is interesting to note that although WIPO eschews the concept of precedence, it denominated the 2017 version as an “Jurisprudential Overview” which I take to mean an acknowledgement that there is, in fact, a jurisprudence and if there is this must mean there is a body of law panelists are encouraged to follow. This is to say that the jurisprudence is not a closed book. Close cases and overreaching of rights are always subject to scrutiny. A different approach to the Overview is offered in a recent online publication, UDRP Perspectives which summarizes the consensus and pays particular attention to new cases as they come down.
What, though, are the basics of this body of legal rules, principles and doctrines that govern the outcomes of UDRP disputes?
In a very real sense, the Policy as implemented was aspirational; it frames a set of guidelines with expectation that panelists will over time establish to determine whether a domain name registrant is liable or not of infringing a complainant’s statutory rights. Although the Policy like any code or statute is the law in the sense of that where it begins, it is not its ultimate expression.
This comes from panelists’ interpretations, or more technically from their constructions of the Policy’s provisions. The Policy can be thought of as “raw” law as distinguished from applied law. There is in the Policy’s language words and phrases that could have one meaning to one and another meaning to another.
There may be some confusion as to what this law is. The Policy is a code that guides decisions but it is not expressed law. It would be anti-historical to insist on what has become known as “original intention” analysis. Applied law emerged from panelists’ constructions of the Policy’s language. This occurred progressively, and from the most authoritative of the decisions there emerged a body of law, a jurisprudence. (Even those panelists who may dispute a body of law, their decisions do not in any significant way depart from it).
From the earliest of decisions, there were a number of different views expressed but some panelists (D. Bernstein, T. Willoughby, N. Gardner. D. Sorkin, A. Lothian among others across all providers including the Forum which houses many of the first generation panelists who started on WIPO no longer tapped for some reason but were instrumental in the development of the jurisprudence (A. Limbury, N. Brown KC among others), eResolution panelists (decisions and names no longer available unfortunately) pressed for consistency of application and the corps of panelists agreed which dampened any enthusiasm for outré views such as retrospective bad faith and renewal as the determinative registration date.
It is not enough to sincerely believe that any particular language in the Policy means A when the consensus of panelists agree that it means B. This should not be taken to mean that panelists are constrained in their analysis of the facts, but it is to the facts as found that the appropriate principles of law are applied.
In answer to some commentators, construction is not a deviation at all but a time-tested process in establishing the parameters of rights. Indeed, a close reading of the most authoritative decisions supports the conclusion that the panelist-authors created space, for example, for lawful speculation of domain names. Constructions are nothing more than creative encrustations that give meaning to the language as written.
For example, it will be noted that the Policy does not include the word “targeting” any more than it includes a great deal of other vocabulary panelists have developed in their constructions. This is important to understand because there is more to the Policy than meets the eye and for those who insist that the Policy is the law and not the interpretations that have come about will always be dissatisfied to some extent.
That panelists follow consensus or not deviate far from it must instruct our understanding of expectations, but we do not expect that these constructions belong in a recodification even if ICANN were ever to convene, and a new working group were to agree to “updating” the UDRP, because any such recodification will then be subject to further constructions, and so on as to each recodification if that were ever to happen. It won’t of course.
In fact, as I mentioned earlier this development into a jurisprudence is precisely what WIPO anticipated. It is no different from what we see courts do on an everyday basis in construing statutory language in adjudicating civil disputes. To the question, then, of who dictates what the law is, the answer is found in the accumulated wisdom of authoritative decisions which have not stopped with the 2017 Jurisprudential Overview but continue to be written.
Over time, the consensus has indeed shifted on a number of issues, and views that were once thought by some panelists to correctly interpret the Policy, latterly lost their shine.[3] (It might be pointed out, although I can’t give attention here, that an argument can be made that attorneys representing respondents, J. Berryhill, J. Shaeffer among others played a significant role in educating panelists to expanded zones of interest to parties’ rights. As a result, Panelists became more scrupulous in measuring rights).
For example, in the early years of the UDRP (and expanding on N. Cohen’s observation in below footnote) there was a view that speculating on domain names composed of dictionary words, acronyms, family names, and descriptive phrases corresponding to trademarks may support cybersquatting. The majority decision in J. Crew International, Inc. v. crew.com Case No. D2000-0054 held
Speculation is not recognized by the Policy as a legitimate interest in a name, and the Policy should not be interpreted to hold that mere speculation in domain names is a legitimate interest. To hold otherwise would be contrary to well-established principles that preclude mere speculation in names and trademarks and would encourage speculators to appropriate domain names that others desire to put to legitimate use. Ultimately, speculation in domain names increases costs to the operators of websites and limits the availability of domain names.”
The Dissent’s interpretation of the Policy (G. Gervaise Davis III) argued that speculation is not per se a violation of a mark owner’s rights. Investing in domain names is a legitimate and a bona fide business which in itself may confer a legitimate interest.
And in Warner Bros. Entertainment Inc. v. Karl Allberg, Claim Number: FA2002001881913 (G. Levine) (“The disputed domain name is a dictionary word that by happenstance corresponds to one of the words in Complainant’s trademark. Complainant does not have a trademark for the word “dumbledore” standing alone. It may be that aficionados steeped in Harry Potter lore will instantly associate ‘dumbledore’ with the fictional character, and possibly with the trademark owner, but that is not enough to grant Complainant a monopoly on a word that has meanings beyond that conveyed by the mark.”
Nevertheless, the meme “speculation equals bad faith” continued to influence panelists for certainly the first two years. For example, in VZ VermögensZentrum AG v. Anything.com Case No. D2000-0527 (Hon. Sir Ian Barker, D. Sorkin and T. Legler) the majority concluded:
While in principle the registrations of descriptive names are perfectly legal in most countries and may constitute considerable value, the mere speculation in generic domain names without showing any demonstrable evidence of plans for the bona fide use is not sufficient to prove legitimate interest in a domain name. Speculation itself is not recognized under the UDRP as a legitimate interest and the UDRP should not be interpreted to hold that mere speculation in domain names is a legitimate interest.”
However, Panelist Sorkin
would reject the broad rule set forth in Libro AG v. NA Global Link Limited, quoted above, and instead would follow the decision in Allocation Network GmbH v. Steve Gregory (WIPO Case No. D2000-0016), which held that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the ICANN policy.
The thinking on this and other issues matured as panelists began distinguishing speculation from demonstrable bad faith. After all, speculation is not ipso facto unlawful (in the words of another federal judge): “[B]ecoming rich [in arbitraging domain names] does not make one’s activity necessarily illegal. Speculation and arbitrage have a long history in this country.”[4]
The main story about the development of UDRP jurisprudence is that it developed out of a muddle of conflicting views and one-off decisions. Generalized language in the UDRP can mean different things to different panelists. The notion that a quick reading of the UDRP is education enough to prevail on a claim of cybersquatting is foolish.
The early different views led some panelists to press for consistency in decision making (D. Bernstein— “[w]hen such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions”—other early panelists including T. Willoughby, P. Argy, D.J. Ryan et al. advanced this view. It was certainly consolidated by 2017. It is now rare for panelists to file one-off decisions, The consensus holds for consistency across providers—A. Lothian, J. Bridgeman, N. Brown KC, A. Limbury, G. Nahitchevansky, J. Spears, S. Levy, M. Kennedy, R. Hill, K. Reed, J. Neuman and many others who make up the core of currently assigned panelists. D. Bernstein the architect of consistency is a rare panelist appointed by both WIPO and the Forum.
Many illustrations of authoritative views influential in forming the consensus for consistency can be cited. I particularly like T. Willoughby’s early decision in Emilio Pucci SRL v. Mailbank.com, Inc., WIPO Claim No. D2000-1786 (WIPO March 27, 2001). The Respondent specialized in registering surnames which included, in this case, the registrant registered <pucci.com>. The Panel concluded:
What the Respondent has done by its wholesale registration of surnames in the
<.com> domain may be regarded by many as a worrying development and for
a number of different reasons. In some jurisdictions and in relation to certain
of the names the Respondent may even be infringing the rights of trade mark
owners. [. . .]
However, and this is the punchline that remains equally relevant today, “[n]one of that is of any relevance to a complaint under the Policy unless the Respondent has acted in bad faith,” which means having the complainant’s mark in mind at the acquisition and using the domain name in bad faith.
- Willoughby consistently maintained this view. In a concurring opinion In Sage Global Services Limited v. Narendra Ghimire, Deep Vision Architects, DAI2023-0010 (WIPO September 1, 2023) (<sage.ai>) he stated:
While some Panels take the view that domainers should conduct trade mark searches in respect of the names they register/acquire, such a view cannot sensibly apply to dictionary words in respect of which there are necessarily innocent, unobjectionable uses of the word/name irrespective of any trade mark registrations which may appear from the search.
As the number of discrete issues swelled and were decided, they were slotted into the jurisprudence. However, so great is the number of complaints filed at a daily rate of 15 to 20 that by 2005 (then in the region of 20,000; it is now in excess of 100,000) it has become impossible for anyone to be in total command of important decisions that postdate the Jurisprudential Overview but fortunately commentary on decisions are published regularly as discussed below.
I opened this essay with the intention of summarizing what I believe are the fundamentals of approach to prosecuting and defending claims of cybersquatting. I said that very high on this list is the ability to translate into action what a panel expects to receive in support of a claim or defense. This involves a kind of rapport with the demands of the Policy. One succeeds by asking questions of the evidence one needs to support a claim or of the counter evidence of good faith, some of the same questions, incidentally, found in the WIPO jurisprudential overview.
If it is enough at all to be acquainted with the Policy, it is only to get a familiarity with the basics. This is because the Policy is not by itself complete without taking into account panelists’ constructions of its provisions and how they are made to apply to the numerous issues that arise in these disputes. This is to say that the text of the Policy is made definite by authoritative constructions and accepted by consensus. One learns what this is either by studying the constructions, going to the decisions themselves, or consulting educational materials, and this takes effort.
Of all forms of assistance (books, commentaries, online presentations, and other interpretative materials) the most important comes from panel decisions. We’re in luck here because ICANN mandates in UDRP Rule 16(b) that panel decisions are to be publicly accessible. But we’re also out of luck because searching decisions is cumbersome and some decisions are more helpful than others, and we need assistance to sort the wheat from the chaff.
While many issues may be regarded as settled, it cannot be said that there is no room for reevaluation of certain critical issues. There are commentators who insistently bring this to our attention. This is in opposition to those who say that the law is now locked in, or in other words that the jurisprudence is now so well established it is only a question of looking up the answer. This is difficult to accept for it would imply that cybersquatting law is static; that there is no reason to revise what has now been accomplished. If this was the case it would mean that there is no further room to grow. This is surely a disingenuous notion for we are well aware that this cannot be. Law is not static. WIPO’s 2017 Jurisprudential Overview is not the law but a snapshot of consensus as it appeared to the editors in 2017.
I have mentioned other educational materials including the Internet Commerce Association’s weekly Digest (introduced in 2022) edited by A. Raheja with commentaries by Z. Muskovitch and occasional others. As an offshoot of this, Mr. Muskovitch and Igor Motsnyi have authored UDRP Perspectives, a compendium of cases associated with particular issues and focusing attention on new decisions. All of this material is equally useful to parties, representatives and panel members and should not be overlooked in educating oneself.
There are also exemplary contributions by Doug Isenberg in his audio and written commentaries (many videos on <youtube.com> under the topic of UDRP (listen to his video interview with A. Christie), and outstanding case commentaries by Neil A. Brown, KC. I have also mentioned T. Willoughby’s Levine lecture. Look out for an upcoming lecture by D. Bernstein scheduled for July 21, 2025, see here.
Some service providers do an excellent job of outreach (Canadian International Internet Dispute Resolution Centre (videos available at https://www.youtube.com/@ciidrcadmin/videos), WIPO and Czech Arbitration Court’s annual meetings unfortunately not available on line or by video. I have attempted to supplement this library of materials with my 2019 treatise on the UDRP and more recently with The Clash of Trademarks and Domain Names on the Internet. All of these materials will be made available in a new website that will be introduced in early 2026.
Each of these resources in its own way focus on the challenges to arbitrating UDRP claims and satisfying panelists’ expectations. If these skills are not in one’s repertory, parties and their representatives will be sorely disappointed with the outcomes of their disputes.
Recap videos mentioned in earlier footnotes:
- Willoughby’s lecture on his experience in adjudicating disputes as one of the first generation of panelists can be heard at https://www.youtube.com/watch?v=dPleS9kdViQ.
- implications of the Supreme Court’s decision for BOOKING.COM is discussed in a video found at https://domainsherpa.com/booking-com-tm/#video (S. Lieberman, K. Bernstein, Z. Muskovitch, and thoughts on how this may impact domain valuations from A. Rosener). Hear also Muskovitch’s informative conversation with David Bernstein about the Booking.com decision, https://domainnamewire.com/2020/11/02/booking-com-and-cybersquatting-dnw-podcast-310/.
[1] It is worth pointing out that when we look at the statistics for some of the panelists mentioned in this essay their production is vastly different from the 95% to 5% spread. For example, the dismissal rates: for D. Bernstein 45%, N. Gardner 31, 35%, A. Lothian 31%, T. Willoughby 28%, D. Sorkin 18% and S. Franklin 10%. The clearest of clear disputes are generally sent to other panelists, for example R. Hill transferred 95% of disputed domain name and D. Osborne 97%.
[2] The Knot, Inc. v. In Knot We Trust LTD, D2006-0340 (WIPO June 26, 2006) (D. Bernstein), Footnote 1: This case is one in a line of cases reaching into the present that insists on consensus building.
[3] In a private communication, commentator and domain name investor N. Cohen pointed out “When the UDRP was drafted over 25 years ago, the presumption if the disputed domain name was the exact match dot-com domain name of the Complainant’s mark would be that the Respondent was a cybersquatter. [ ] Now, over 25 years later, the presumption is that the domain name was registered to a third-party when the Complainant adopted its mark, that the Complainant cannot claim exclusive rights to the mark, and that the Complainant is misusing the UDRP in an attempt to seize a valuable domain name that it covets without compensating the owner” Email dated March18, 2025.
[4] Intermatic Inc. v. Toeppen, 947 F. Supp.1227 (N.D. Ill.1996). The Panel in <drmuscle.com> (D. Bernstein) pointed out that “[d]omain name speculation alone is not bad faith. Rather, to constitute bad faith, the speculation must be targeted at the trademark value of a name.”